Fundamentals Of Intellectual Property Protection Final

FUNDAMENTALS OF
INTELLECTUAL PROPERTY
SLIDES AND INFORMATION © 2012 EARLE HAGER
ALL RIGHTS RESERVED 1

CRDF Training Ivano-Frankivsk and
April 2012
Dnepropetrovsk © 2012 Earle Hager

WHY PATENTS?

• Society benefits from the development of new
ideas
• The commercialization of these ideas must have an
economic reward for risk takers

April 2012 2

MY GOAL

• Introduce group to patent concepts and ideas
• Cannot evaluate individual ideas in discussion, but
will provide concepts and terms for consideration in
the development of a patent strategy
• Patents are a reward from the marketplace for
continuous research and development
• Products which cannot be patented can be sold as
a ‘sales and marketing opportunity’ or protected as
a ‘trade secret’

April 2012 3

YOUR GOAL

• Create defensible IP which can be used for
licensing, funding, sale, or other financial
opportunities
• Patents are awarded and defended
• The award of a patent gives you the right to defend
the patent
• It does not protect you from counter claims or
lawsuits

April 2012 4

THREE IMPORTANT THINGS

• 1. You need a lawyer. This material is complicated
and you must carefully plan each step

April 2012 5


• 2. Most countries track patents by Filing Date. The
date you file your initial paperwork is critical when
compared to similar claims. The United States is
transitioning from a ‘first to invent’ to a ‘first to file’
system.

April 2012 6


• 3. The definition of your idea in the initial filing is
critical. Countries limit your ability to modify your
paperwork after filing. The definition must be limited
enough to be unique and broad enough to include
similar modifications of your idea.

April 2012 7

THE BASICS

Everything is about Process

April 2012 8

AGENDA

• IP Strategy
• Patents
• International IP Standards
• Trade Secrets
• Copyrights
• Trademarks
• Industrial Design
• Conclusion

April 2012 9

IP STRATEGY
10

April 2012

STRATEGY

• IP strategy ties closely with business strategy

April 2012 11

STRATEGY

• Your goal is to seek initial protection for your
innovation and use the provisional, PCT, or regional
filings as a basis for licensing and partnerships
discussions
• The cost of expanding IP protection will become
part of the business model

April 2012 12

STRATEGY

• The simplest step might be to patent in your home
country and file for a provisional patent in the
largest market – the United States
• This will give you one year with the provisional
patent for you to decide how to proceed
• Adding additional patent options can be covered
as you develop the business needs and finances to
execute

April 2012 13

LEVERAGING ASSETS

• Global patent strategy is expensive
• In seeking partners for your business strategy, look
for organizations with experience in filing IP claims in
your space

April 2012 14

PLANNING

• In this presentation, you should understand terms
and concepts and use these to develop your
business model
• Although filing is expensive, releasing information
prevents others from using your ideas
• Public information cannot be patented

April 2012 15

PATENTS
16

April 2012

WHAT IS A PATENT?

• A patent is a type of intellectual property
• The ownership of a patent is legally enforceable in
gives you exclusive right to limit others in using your
idea
• Patents, as an asset, can be sold, licensed, or used
as a basis for loans or capitalization

April 2012 17

WHAT IS A PATENT?

• Utility patents are awarded for devices with a use
• Design patents are awarded for the appearance
of a device or object

April 2012 18

WHAT IS A PATENT?

• Plant patents are awarded for the appearance
and color of a plants, such as flowers. This is critical
to organizations who develop seeds and plants to
grow in different environments
• Cells and living animals are being awarded patent
protections. This is important for medical research
where certain types of mice have been developed
for cancer studies.

April 2012 19

WHAT IS A PATENT?

• With a patent award, the inventor has exclusive
rights to idea for a defined time period
• In the marketplace, it rewards the inventor and
allows them to recover development costs and
profit from risk
• The patent is a legally enforceable monopoly for
the innovation

April 2012 20

WHAT IS A PATENT?

• Patent is enforceable against competitors in both
civil and criminal courts internationally
• Reverse engineering cannot be used to override a
patent
• Independent research cannot
be used as justification to
override a patent

April 2012 21

WHAT IS A PATENT?

• In this process, you will apply for the patent and the
government will review your application, which will
take several years
• Until the patent is awarded, the government will not
provide protection from infringement
• It is possible for an idea to be obsolete by the time
the government awards the patent

April 2012 22

PATENT REQUIREMENTS

A Patent must have three characteristics:

• Useful – have commercial or utilitarian value

• Novel – unique, not patented or published
elsewhere. Publishing limits include the patent
applicant.

• Non-Obvious – to “one having ordinary skill in the
art to which said subject matter pertains”

April 2012 23

PATENT REQUIREMENTS

• A patent is not a law of nature or a scientific
formula
• A patent is not an idea, but the execution of an
idea

April 2012 24

PATENT SPECIFICATION

• Patent Specification is the description of invention
• List of requirements to develop or utilize invention
• Optimal use of innovation as viewed by the inventor
• Features which differentiate the product from other
products or ‘prior art’
• Key part of process – most governments will limit your ability
to modify the specifications after the initial application

April 2012 25

PATENT ASSIGNMENTS

• Employees and consultants are usually required to
transfer all rights for products developed to the
organization
• Key aspect of the relationship between owners and
employees or consultants

April 2012 26

PATENT INFRINGEMENT

• Infringement is when some uses the patent
• Legal limits on their access to the patent
• Economic damages from their revenues from
patent infringement
• Definition of the patent in the initial filing is critical to
infringement claims
• Challenge against the validity of the patent and
the infringement of the patent

April 2012 27

INTERNATIONAL IP
STANDARDS
28

April 2012

INTERNATIONAL PATENTS

• The enforcement of regional patents lies within the
jurisdiction of each member State.

April 2012 29

PATENT DISCLOSURE

• Patents are disclosed as part of the approval
process.
• For multi-country applications, you will need to
coordinate the best strategy for application and
disclosure

April 2012 30

IT’S GETTING EXPENSIVE

• Yes, it is. Individual filing fees, lawyers, and so forth.

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• A patent is, in general, granted by a national
patent office. The effects of such a grant are,
however, limited to the country concerned.
Patents may also be granted by a regional
office that does the work for a number of
countries, such as the European Patent Office
(EPO) and the African Regional Industrial
Property Organization (ARIPO).

April 2012 32


• Under such regional systems, regional patent
office accepts regional patent applications, or
grants regional patents, which have the same
effect as applications filed, or patents granted,
in the member states of that region.

April 2012 33

PCT

• PCT is a registration process and can be used as the
basis for pursuing patents in multiple countries
• PCT is not a patent application for multiple
countries
• Upon PCT approval, you still need to pursue patent
applications in individual countries
• Your successful PCT documentation can be used for
your application in other countries

April 2012 34


• The WIPO-administered Patent Cooperation Treaty
(PCT) is an agreement for international cooperation
in the field of patents. It is largely a treaty for
rationalization and cooperation with regard to the
filing, searching and examination of patent
applications and the dissemination of the technical
information contained therein.

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• The PCT does not provide for the grant of
“international patents”: The task and responsibility
for granting patents remains exclusively in the hands
of the offices mentioned in the paragraph above.

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• At present, no “ orld patents” “
w or International
patents” exist.
• In general, an application for a patent must be
filed, and a patent shall be granted and enforced,
in each country in which you seek patent
protection for your invention, in accordance with
the law of that country.

April 2012 37


• In some regions, a regional patent office, for
example, the European Patent Office (EPO) and
the African Regional Intellectual Property
Organization (ARIPO), accepts regional patent
applications, or grants patents, which have the
same effect as applications filed, or patents
granted, in the member States of that region.

April 2012 38


• Further, any resident or national of a Contracting
State of the Patent Cooperation Treaty (PCT) may
file an international application under the PCT. A
single international patent application has the same
effect as national applications filed in each
designated Contracting State of the PCT.

April 2012 39


• However, under the PCT system, in order to obtain
patent protection in the designated States, a
patent shall be granted by each designated State
to the claimed invention contained in the
international application.

April 2012 40


• Procedural and substantive requirements for the
grant of patents as well as the amount of fees
required are different from one country/region to
the other.
• It is therefore recommend that you consult a
practicing lawyer who is specialized in intellectual
property or the intellectual property offices of those
countries in which you are interested to get
protection.

April 2012 41

PROCESS

• Determine which countries you wish to target for
development or sales
• If this number is large, the PCT process will be
advantageous
• If the number is smaller (5-6 in the same region), you
should look to regional patent treaties
• If the number is less than 5, you should consider filing
in the individual countries

April 2012 42

TRADE SECRETS
43

April 2012

TRADE SECRETS

• Trade secrets are information which cannot be
patented
• The claimed secret must be secret in fact, have
economic value, and you must take reasonable
steps to keep the information secret
• Examples of trade secrets include research
data, client lists, formulations, and other
information not subject to patent law

April 2012 44

TRADE SECRETS

• Protection of trade secrets must be a reasonable
effort and organizations should not be held to an
extreme standard.
• Examples would be use of confidentiality
agreements, passwords for system access, limit data
access

April 2012 45

TRADE SECRETS

• Trade secrets exist for as long as the information is
secret and valuable
• Trade secrets are protected by the courts
• Trade secrets are not the basis for investment or loans

April 2012 46

TRADE SECRETS

• Government agencies and public universities may
have limited ability to generate trade secrets
• The concept would be whoever pays for the
development of the information should have access
to the information

April 2012 47

COPYRIGHTS
48

April 2012

COPYRIGHT

• Copyright is a method of giving protection to
authors of works for their creative efforts. The legal
definition of for them to copyright their ‘works’.

April 2012 49

COPYRIGHT

• Copyright is extended to the expression of thoughts,
but not to the ideas. You cannot copyright the
idea of ‘religious freedom’. You can copyright your
writings on the subject.
• Copyright protection is automatically extended to
works as they are created, without the need to
register or claim protection with a government
agency.
CRDF Training Ivano-
Frankivsk and
Dnepropetrovsk ©
2012 Earle Hager
April 2012 50

COPYRIGHT

• Copyright owners have economic rights, which
allow them to have financial reward for their works
and moral rights, which link the author to the work.
• Moral rights allow you to control the presentation
and editing of your ideas by others

April 2012 51

NEIGHBORING RIGHTS

• Neighboring rights are associated with the public
performance of a work. Although the works of
Prokofiev are not copyrighted, the public
performance, recording, and broadcast of ‘Peter
and the Wolf’ would be copyrighted.

April 2012 52

NEIGHBORING RIGHTS

• Much of the work in copyrighting performances
came about after a recording of a Crosby, Stills,
Nash, and Young concert was recorded and sold in
the 1970s.
• Other bands, such as The Grateful Dead, have
permitted the recording and sharing of their
concerts for anyone who does not achieve
economic gain.

April 2012 53

COPYRIGHT

• Copyright law protects published and unpublished
works. Works are protected regardless of the
perceived scientific, literary, or artistic value.
• Copyright law protects authors, regardless of the
manner of expression. This will allow people to
copyright their performances, writing, paintings, or
other forms of expression.

April 2012 54

TRADEMARKS
55

April 2012

TRADEMARKS

• A trademark is a sign or logo to distinguish a
company or idea from others. The letter ‘M’ is not a
trademark, the letter ‘M’ in the McDonald’s logo is
a trademark.

April 2012 56

TRADEMARKS

• Key issue for this class is to avoid duplication or
confusion between your name or logo and others

April 2012 57

TRADEMARKS

• Apple and Proview are suing over iPad name
• Punk band ‘Thorazine’ was given a cease and
desist order by GSK
• Value of intellectual property is often the amount of
money you want to spend defending it

April 2012 58

INDUSTRIAL DESIGN
59

April 2012

INDUSTRIAL DESIGN

• An industrial design is the ornamental aspect of an
article
• No claims are made to the patentability of the
article, merely the desire to protect the uniqueness
of the design
• Key issue for jewelry, housewares, instruments, and
other products which do not have patent
protection.

April 2012 60

IN CONCLUSION …
61

April 2012

NO IP?

• Your product may be a sales / marketing
opportunity

April 2012 62

TO START

• Define your idea in terms of its unique aspects
• Search Ukrainian and global databases for similar
applications
• Redefine your idea in terms of its unique aspects
• Parts of the product/idea will be unique, other parts
may not. The unique parts of the product/idea
would be awarded patent protection.

April 2012 63

DATABASES FOR SEARCHING

• Global -
http://www.wipo.int/patentscope/search/en/struct
uredSearch.jsf
• Ukraine - http://www.ukrpatent.org/en
• Each local country has patent databases

April 2012 64

WEBSITES FOR INFORMATION

• http://investukraine.com/investors-
guide/intellectual-property-rights-in-ukraine
• http://www.wipo.int/about-wipo/en/gib.htm
• http://www.wipo.int/treaties/en/ip/index.html
• http://www.ukrpatent.org/en

April 2012 65

MORE ABOUT PATENTS

• iTunes
• iPhone and iPad
• Applications for other Platforms

April 2012 66

IPHONE SCREENS

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IPHONE SCREENS

April 2012 68

IPHONE SCREENS

April 2012 69

IPHONE SCREENS

April 2012 70

ITUNES RESOURCES

April 2012 71

ITUNES RESOURCES

April 2012 72

ITUNES RESOURCES

April 2012 73

THANK YOU

Earle Hager
Managing Partner, The Neutrino Donut, LLC
Commercialization of Science and Technology
ehager@austin.rr.com
Skype: earle.hager.panidea
+1 512 662 1728
http://www.linkedin.com/in/earlehager
http://tinyurl.com/6vy4uum

April 2012 74

Fundamentals Of Intellectual Property Protection Final

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